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Presenting a live 90-minute webinar with interactive Q&A
The URS, UDRP, ACPA and Beyond:
Domain Name Enforcement in the gTLD Era Strategies for Brand Protection, Leveraging Recent Decisions, Weighing the Pros and Cons
Today’s faculty features:
1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific
TUESDAY, MARCH 7, 2017
Debra L. Innocenti, Partner, Innocenti Jones, San Antonio
Jonathan S. Jennings, Partner, Pattishall McAuliffe Newbury Hilliard & Geraldson, Chicago
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Contents
I. Domain Name Basics
II. Anticybersquatting Consumer Protection Act (ACPA)
III. Uniform Domain Name Dispute Policy (UDRP)
IV. Custom Policies
V. Uniform Rapid Suspension System (URS)
VI. Monitoring for Infringements
VII. Choosing Dispute Options
5
I. Domain Name Basics
6
Internet Naming and Addressing System • The Internet Assigned Numbers Authority (IANA)
functions ensures that the Internet works • The IANA functions are the allocation and maintenance
of the unique codes and numbering systems used in technical standards (“protocols”)
• Domain Names. Management of the DNS Root, the .int and .arpa domains, and an IDN practices resource.
• Number Resources. Co-ordination of the global pool of IP addresses and Autonomous System Numbers (ASNs), providing them to Regional Internet Registries (RIRs).
• Protocol Assignments. Internet protocols’ numbering systems are managed in conjunction with standards bodies.
7
How unique identifiers work.
The domain name is sent to a server that translates the name into a number (the Internet protocol or IP Address) that the server uses to direct your request to the website’s network location. Those names and numbers are called “unique identifiers” and are aligned with a standard set of protocol parameters that ensure computers can talk to and understand each other.
When you visit a website, you type the site’s domain name into your browser or you click on an html link. That domain name is a unique identifier.
8
ICANN.
• The Internet Corporation for Assigned Names and Numbers (ICANN) is the private sector, non-profit corporation created in 1998 to assume responsibility for ensuring the Internet’s stable and secure operation.
• ICANN contracted with the U.S. Commerce Department’s National Telecommunications and Information Administration (NTIA) to perform the IANA functions.
9
IANA functions transition.
• On March 10, 2014, NTIA announced the transition of IANA functions to a a global multi-stakeholder community.
• Public Technology Identifiers (PTI) was incorporated in August 2016 as an affiliate of ICANN and began performing IANA functions in October 2016.
10
Domain name registration.
A domain name registry is an organization that manages top-level domain names. It creates domain name extensions (e.g. .com, .net, and .org), sets the rules for that domain name, and works with registrars (e.g. GoDaddy) to sell domain names to registrants.
11
Parts of a domain name.
http://www.domain.com
Application transfer protocol
Host name
Second level domain name
Top level domain
12
ICANN created.
NTIA contract for IANA
functions.
1998
1999
ACPA enacted.
UDRP launched.
2013
URS launched.
2014
NTIA announces transition of IANA
functions to global multi-stakeholder community.
2015
IANA contract expires.
2016
PTI incorporated and begins
functioning.
2012
2008
ICANN announces thousands of gTLD apps that rollout
through 2013.
ICANN starts new process of
introducting new gTLDs.
13
II. Anticybersquatting
Consumer Protection Act
14
Goal for ACPA
• Act signed into law on November 29, 1999
• Goal of the Act: “to protect consumers and
American businesses, to promote the
growth of online commerce, and to provide
clarity in the law….” S. Rep. No. 106-
140, at 4.
15
Cause of Action
• ACPA created a cause of action under the
Lanham Act against one who, with bad faith
intent to profit from a mark, registers,
traffics in, or uses a domain name that is
(15 U.S.C. 1125 (d)):
• Identical or confusingly similar to a mark
that was distinctive at the time of the
domain name registration, or
• Identical or confusingly similar to or dilutive
of a mark that was famous at the time of
the domain name registration
16
Cause of Action
The Act also protects personal names or
words protected by reason of 18 U.S.C.
706 and 36 U.S.C. 220506 in the same
manner as marks, e.g., Olympic Names,
Red Cross, etc.
17
Bad Faith Factors under
ACPA
• Statute creates non-exhaustive list of factors
to determine bad faith (or lack thereof):
• Any trademark or other intellectual property
rights alleged violator has in the domain
name
• Legal name of person or a name commonly
used to identify him
• Person’s prior use of domain name in bona
fide offering of goods or services
18
Bad Faith Factors under
ACPA
• Intent to divert consumers from the mark owner’s online location… that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating likelihood of confusion
• Offer to sell, transfer or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having the intent to use, the domain name in a bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct
19
Bad Faith Factors under
ACPA
Provision of material and misleading false
contact information when applying for
registration of the domain name,
intentional failure to maintain accurate
contact information, or the person’s prior
conduct indicating a pattern of such
conduct
20
Bad Faith Factors under
ACPA
• Registration or acquisition of multiple
domain names known to be identical or
confusingly similar to the marks of others
• Extent mark incorporated in domain name
is or is not distinctive and famous under
section 43 (c)(1) of the Lanham Act
21
SPORTY’S FARM LLC v.
SPORTSMAN’S MARKET, INC.,
202 F.3D 489 (2d Cir. 2000)
• SPORTY’S for mail order catalog company for
aviation and houseware products versus
SPORTYS.COM in connection with a site used
to sell Christmas trees
• SPORTYS.COM was owned by a subsidiary of a
competitor of the owner of SPORTY’S
22
SPORTY’S FARM LLC v.
SPORTSMAN’S MARKET, INC.,
202 F.3d 489 (2d Cir. 2000)
• Bad faith because: • Court affirmed finding that Sportys.com registered with the
primary purpose to prevent the owner of SPORTY’S from
using that domain name
• Court emphasized that bad faith factors are non-exhaustive
and facts of this case did not squarely fit into those factors
• No prior bona fide offering of goods or services by
owner of website
• Plan to enter direct competition with SPORTY’S
• Website owner had knowledge of SPORTY’S
23
SHIELDS v. ZUCCARINI, 2000 WL
298300 (E.D. Pa.), affirmed 254
F.3d 476 (3rd Cir. 2001)
Court preliminarily enjoined use of JOE
CARTOON domain name variations
24
SHIELDS v. ZUCCARINI, 2000 WL
298300 (E.D. Pa.), affirmed 254
F.3d 476 (3rd Cir. 2001)
• Defendant used site for commercial purposes
before dispute and then after the filing of the
action converted it to a political protest site
• Defendant had registered thousands of
domain names that were similar to other
famous marks or personal names
• In finding compelling evidence of bad faith,
Court rejected fair use defense
25
VIRTUAL WORKS, INC. v. NETWORK
SOLUTIONS INC., VOLKSWAGEN OF
AMERICA, INC., 2000 U.S. Dist. LEXIS
2670 (E.D. Va.)
Court found VW.net is the intuitive
domain name of Volkswagen and that
Virtual Works had no trademark rights
in VW.
26
VIRTUAL WORKS, INC. v.
NETWORK S
• References to Volkswagen as Nazi using
slave labor disparaged Volkswagen
• Virtual Works had offered to sell the
domain name to Volkswagen
27
XEREAS V. HEISS., 933
F.Supp.2d 1 (D.D.C. 2013)
• Former business partner re-registered
plaintiff’s domain name in name of
former business
• Internet cyberpiracy constitutes per se
trademark dilution.
28
Gripe Sites – Mayflower Transit,
LLC v. Prince, 314 F. Supp. 2d 362
(D.N.J. 2004)
• Unhappy customer of moving company registered domain name
to detail bad moving experience
• Court found cyber-griper lacked requisite bad faith intent to profit
for ACPA claim
• Although clear bad faith intent to tarnish the Mayflower company
name, there was no evidence of intent to profit, but rather intent
to cause Mayflower to change its company performance
• Domain name registration to provide critical commentary not
cybersquatting
29
Limitation of Liability Under
ACPA • Bad faith described above shall not be found in any
case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful
• Person liable only if they are the domain name registrant or that registrant’s licensee
• Limitation of liability under Lanham Act for registrars, registries, or other domain name registration authorities absent bad faith, willfulness, or failure to comply with Court orders or procedures
30
Contributory Cybersquatting– Petroliam
Nasional Berhad v. GoDaddy.com, Inc., 737
F.3d 546 (9th Cir. 2013), cert. denied
• Trademark owner sued registrar of
cybersquatting domain names under
ACPA
• Ninth Circuit held ACPA does not create
claim for contributory cybersquatting
• But see Transamerica Corp. v. Moniker
Online Servs., LLC, 672 F. Supp. 2d
1353, 1364 (S.D. Fla. 2009) (plaintiff
stated claim for contributory
cybersquatting)
31
Relief under ACPA
• Allows courts to order the forfeiture,
cancellation or transfer of domain
name whether it was registered before,
on or after the effective date of the Act
• Also allows traditional remedy of an
injunction under section 34(a) of the
Lanham Act
32
Monetary relief under ACPA
• Monetary relief under section 35(a) of
the Lanham Act available,
• May elect to recover prior to trial,
instead of actual damages and profits,
an award of statutory damages ranging
from $1000 to $100,000 per domain
name, as the court considers just
• No damages if domain name registered
before November 29, 1999
33
Skydive Arizona, Inc. V.
Quattrocchi, 673 F.3d
1105 (9th Cir. 2012)
Affirmed jury award of $600,000 for
statutory damages under ACPA -
$100,000 per domain name (maximum).
Note: Jury also awarded $1 million for
false advertising and $2.5 in lost profits.
34
Newport News Holdings Corp. v.
Virtual City Vision, Inc., 650 F.3d 423
(4th Cir. 2011)
• Affirmed district court award of attorneys’
fees – defendant’s conduct was exceptional
because after being notified of plaintiff’s
rights in domain name it tried to
commercialize its use.
• Also awarded $80,000 in statutory damages
for “egregious and exceptional” conduct
35
In Rem Provision Under ACPA
Act authorizes in rem civil actions
against the domain name itself in
the judicial district in which the
domain name registrar, registry, or
other domain name authority that
registered or assigned the domain
name is located
36
Requirements For In Rem
• The domain name violates any right of the owner of
a mark registered in the PTO, or protected under
sections 43(a), (c) or (d) of the Lanham Act, and
• The court finds that the owner: • Is not able to obtain in personam jurisdiction, or
• Through due diligence was not able to find person by • Sending a notice of the alleged violation and intent to proceed
under this section to the registrant of the domain name at the
postal and e-mail address provided by the registrant to the
registrar, and
• Publishing notice of this action as the court may direct promptly
after filing the action
37
CAESARS WORLD, INC. v.
CAESARS-PALACE.COM, 2000
U.S. Dist. LEXIS 2671 (E.D. Va.)
Plaintiff is not required to “prove its case”
prior to filing an in rem action.
38
In Rem Relief Restriction
Remedies for in rem action
limited to forfeiture, cancellation
or transfer of domain name to
the owner of the mark
(Volkswagen, AG v. Volkswagentalk.com,
584 F. Supp. 2d 879
(E.D. Va. 2008))
39
Harrods, Ltd. v. Sixty Internet
Domain Names, 302 F.3d 214
(4th Cir. 2002)
A claim may be brought for
cybersquatting invoking in rem
jurisdiction under other provisions of the
Trademark Act for infringement, false
designation of origin, or dilution.
40
LUCENT TECHNOLOGIES INC.
v. LUCENTSUCKS.COM,
2000 WL 554567 (E.D. Va.)
• First in rem case filed under ACPA
• LUCENTSUCKS.COM was linked to a porn site • Server subsequently removed link
• In granting a motion to dismiss, court found
that filing in rem action 8 days after sending
notice of intent to proceed by e-mail and U.S.
mail to the registrant is not due diligence
41
Continental Airlines, Inc. v.
continentalairlines.com,
390 F. Supp. 2d 501
(E.D. Va. 2005)
A court may waive the publication requirement
when the plaintiff proved that the domain
name registrant had actual notice of the
lawsuit.
42
Agri-Supply Co. v. Agrisupply.com,
457 F. Supp. 2d 660 (E.D. Va.
2006)
Default judgment in an in rem action,
plaintiff may recover actual damages,
costs, and attorneys’ fees in exceptional
cases.
43
Protection of an
Individual’s Name
There is a U.S. statute, 15 U.S.C. § 8131, that
creates liability for registration of a domain
name without consent after November 29,
1999, that is another living individual’s name,
or one substantially and confusingly similar to
it, and with the specific intent to profit from
such name by selling the domain name for
financial gain to that person or a third party
44
Protection of Individual’s Name
• Discretionary award of costs and fees to the
prevailing party under this provision
• Exception to liability for a name used in,
affiliated with, or related to a work of
authorship under the Copyright Act and if the
person registering the domain name is the
copyright holder or licensee of the work
45
Protection of Individual’s Name • If, however, a domain name that is
registered before this date is later re-
registered by a new entity, some courts will
apply the Act.
• Compare Schmidheiny v. Weber, 319 F.3d
581 (3d Cir. 2003) (applying the Act to a re-
registration), with GoPets Ltd. v. Hise, 657
F.3d 1024 (9th Cir. 2011) (declining to apply
the Act to a re-registration).
46
III. Uniform Domain Name Dispute Policy (UDRP)
47
UDRP Historical Background • Core task of ICANN was to address ”The Trademark
Dilemma,” the fraudulent use of trademarks as domain names.
• ICANN commissioned the United Nations World Intellectual Property Organisation (WIPO) to produce a report on the issue.
• WIPO Report recommended a “mandatory administrative procedure concerning abusive registrations.”
• UDRP launched December 1, 1999.
• Contractual. UDRP is incorporated by reference into your Registration Agreement.
48
UDRP Service Providers
• Asian Domain Name Dispute Resolution Centre
• National Arbitration Forum
• WIPO
• The Czech Arbitration Court Arbitration Center for Internet Disputes
• Arab Center for Domain Name Dispute Resolution (ACDR)
49
UDRP Fees
• Set by Provider.
• WIPO • Between 1 and 5 domain names, $1,500 for single panelist
and $4,000 for 3 panelists. Between 6 and 10 domain names, $2,000 for single panelist and $5,000 for 3 panelists.
• Forum • Between 1 and 2 domain names, $1,300 for single panelist
and $2,600 for 3 panelists. Between 3 and 5 domain names, $1,450 for single panelist and $2,900 for 3 panelists. Between 6 and 10 domain names, $1,800 for single panelist and $3,600 for 3 panelists. Between 11 and 15 domain names, $2,250 for single panelist and $4,500 for 3 panelists.
50
UDRP Model Complaint and Filing Guidelines
• Providers have Provider-specific supplemental rules.
• Providers have model complaints and ability to file online.
51
UDRP: Elements of Claim [UDRP, 4(a)]
1) The domain name is identical or confusingly similar to a Complainant’s trademark or service mark;
2) Respondent has no rights or legitimate interests in domain name; and
3) The domain name was registered and is being used in bad faith. a) Most difficult element. Must show both bad faith
registration and use. b) UDRP sets forth a list of nonexclusive factors for a
finding of bad faith. See ICANN, Uniform Domain Name Dispute Resolution Policy, Art. 4(b).
52
UDRP Defenses to Claim [UDRP, 4(c)-(d)]
• before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
• you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; -or-
• you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
53
UDRP Administrative Timeline [UDRP Rules, 4(a)-(b)]
• Provider submits verification request to Registrar.
• Registrar required to lock domain within 2 calendar days of receiving Provider’s verification request.
• Provider conducts administrative review within 3 calendar days of receipt of fees.
• If in compliance, Provider forwards complaint to Registrar and Respondent. If not in compliance, Provider forwards to back to Complainant who has 5 calendar days to correct deficiencies.
54
UDRP Administrative Timeline [UDRP Rules, 5]
• Respondent has 20 calendar days from commencement of proceeding to file a response.
• There is no express limit for extensions upon request from Respondent or approved stipulation of the parties.
• There is no express limit on response.
55
UDRP Examination [UDRP, 4(e); UDRP Rules, 3(b)(iv), 5(b)(iv)-(v), 5(c), 6]
• One panelist, selected by the Provider, -or-
• Three-member panel, at the option of the Complainant or Respondent. • If requested by Complainant, each party submits a list of
3 candidates to serve as 1 member of panel. One member chosen by Complainant, one by Respondent, one by Provider.
• If requested by Respondent, Respondent shares fees.
56
UDRP Standard of Proof [UDRP Rule 15(b)]
• Each element by preponderance.
• Decided on the basis of the statements and documents submitted and in accordance with UDRP, Rules, and any rules and principles of law deemed applicable.
57
UDRP Decision [UDRP Rule 15(b)]
• Within 14 days of the panel’s appointment.
58
UDRP Remedies
• Cancellation of the domain name -or- transfer of the domain name registration to the Complainant.
• Status quo maintained until conclusion of proceeding and cancellation or transfer order is received from Respondent, court or arbitral tribunal, or UDRP panel.
59
UDRP Appeal or Other Proceedings [UDRP 4(k)] • Respondent or Complainant may submit the
dispute to a court of competent jurisdiction before or after proceeding is concluded.
60
Weaknesses
• No guarantee that a ruling will be a final determination of rights.
• Damages and injunctions not available.
• Rulings can be unpredictable and inconsistent and can sometimes wholly disregard the law.
• NSK LTD. v. Li Shuo, FA170100 1712449 (Forum February 16, 2017) ()[combined mark case; panel departs from the usual determination that a disputed domain name incorporating the complainant’s mark as a whole will suffice to demonstrate confusing similarity]
• Julia Fiona Roberts v. Russell Boyd, Case No. D2000-1210 (WIPO May 29, 2000) (finding common law service mark rights in a personal name) versus Reverend Dr. Jerry Falwell v. Gary Cohn, Case No. D2002-0184) (WIPO June 3, 2002) (finding no such rights).
61
IV. Custom Policies
• Sunrise Dispute Resolution Policy (SDRP)
• Registration Eligibility Dispute Resolution Policy (REDRP)
• Other Custom Policies • UDRP-F for Frogans
• Central Nic's CDRP
• .music copyright policy
• Reserved Names Challenge Policies for fTLDs
62
V. URS
The Uniform Rapid Suspension System
(URS) is a dispute resolution policy similar
to the UDRP, but intended to be speedier
and more cost-effective, and focused on the
more flagrant cybersquatting incidents.
63
URS
The system applies only to domain names
registered in new gTLDs launched after
January 1, 2013, though some country-code
TLDs may opt in.
https://www.icann.org/resources/pages/ur
s-2013-10-31-en
64
https://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-enhttps://www.icann.org/resources/pages/urs-2013-10-31-en
URS
Unlike the UDRP, however, the URS only
applies to marks that are registered,
validated through court proceedings, or
specifically protected by statute or treaty,
thereby eliminating protection for most
unregistered marks.
65
URS
The URS complaint is also more limited than
in a UDRP proceeding: the submissions
must be 500 words or fewer, inserted into
an online form, allowing little leeway for a
complainant to structure a complaint.
66
URS
The requirements to prevail in a URS proceeding are
similar to those in a UDRP action, protecting both
trademarks and service marks and considering
whether: (1) the registered domain name is identical
or confusingly similar to the complainant’s mark, (2)
the registrant has no legitimate right or interest in the
domain name, and (3) the domain was registered and
is being used in bad faith. See Rule 1, URS
Procedures (Mar. 1, 2013).
67
URS
The URS proceedings do require a higher
evidentiary burden: clear and convincing
evidence, instead of the preponderance of
the evidence standard in UDRP
proceedings.
68
URS
Three service providers are empowered to hear
URS disputes:
1. Forum;
2. the Asian Domain Name Dispute Resolution
Centre; and
3. MFSD Srl.
69
URS
The URS is designed to obtain a decision in
around 20 days for a $375 fee, as
compared with 45 days for approximately
$1,500 for a UDRP decision.
70
Impact of URS proceeding
Losing a URS proceeding does not preclude
seeking a remedy through the UDRP or
ACPA. See Rule 13, URS Procedures (Mar.
1, 2013).
71
Appealing a URS decision
A losing party may choose to appeal an
examiner’s decision in a URS proceeding,
but must file the appeal within 14 days of
the original decision. See Rule 12, URS
Procedures (Mar. 1, 2013).
72
URS Decisions
• The first filing was made by Facebook,
which sought removal of “facebok.pw.”
• Despite the heavier evidentiary burden,
Facebook easily secured suspension.
• Facebook Inc. v. Radoslav, NAF Case No.
FA1308001515825 (Sept. 27, 2013)
73
Six Continents Hotels, Inc. v. Beyond
the Dot LTD, NAF Case No. FA
1578896 (Sept. 29, 2014)
Suspending “holidayinn.tokyo” because it
was confusingly similar to the
complainant’s HOLIDAY INN trademark
74
Navistar Int’l Corp. v. VistaPrint
Techs. Ltd., NAF Case No.
FA1410001586755 (Dec. 15, 2014) • domain name
• Confusingly similar when respondent added “t”
• WHOIS record supplied evidence that Respondent
not commonly known by the domain name, and
thus no rights or legitimate interest
• Use of domain name to resolve to a page that
promotes itself evidence of bad faith
• Also, evidence that Respondent attempted to pass
itself off as Complainant’s CFO to commit wire fraud
75
Challenges in Showing “Clear
and Convincing” Bad Faith • Little to no analysis provided in decisions.
• Milhaus Development LLC v. Contact
Privacy Inc., NAF Case No.
FA1608001690633 (Sept. 8, 2016):
Despite Respondent’s default, bad faith
was not “clear and convincing.”
• ARCELORMITTAL v. Cameron Jackson,
NAF Case No. FA1608001690435 (Sept.
8, 2016) (same)
76
Owner of Trademark Must
Match
• Wolfram Research, Inc. v. Andrew Davis
et al., NAF Case No.
FA1404001553139 (April 12, 2014):
WOLFRAM trademark in name of
“Wolfram Group LLC” and not
complainant, so no right in the domain
name wolfram.ceo.
77
URS - Potential Inconsistencies
• Two claims filed on behalf of Sketchers’ regarding
, both against respondent Williams
• First decision, suspension denied, Examiner claimed that
complainant “did not submit one single argument to
demonstrate why he considers that the Registrant does not
have legitimate right or interest to the domain name.” NAF
Case No. FA1503001609616 (Apr. 5, 2015)
78
URS - Potential Inconsistencies
• Second decision, same claim, but
Examiner found Sketchers established all
three elements. Bad faith implied based
on fact SKX mark submitted to Trademark
Clearing House. NAF Case No.
FA1504001614750 (May 5, 2015)
79
VI. Monitoring for Infringements
• Watch services
• Conducting sweeps
80
Trademark Clearinghouse
The Trademark Clearinghouse is a
centralized database provided by ICANN,
which automatically connects to each newly
launched gTLD.
http://www.trademark-
clearinghouse.com/content/what-
trademark-clearinghouse
81
http://www.trademark-clearinghouse.com/content/what-trademark-clearinghousehttp://www.trademark-clearinghouse.com/content/what-trademark-clearinghousehttp://www.trademark-clearinghouse.com/content/what-trademark-clearinghousehttp://www.trademark-clearinghouse.com/content/what-trademark-clearinghousehttp://www.trademark-clearinghouse.com/content/what-trademark-clearinghousehttp://www.trademark-clearinghouse.com/content/what-trademark-clearinghousehttp://www.trademark-clearinghouse.com/content/what-trademark-clearinghousehttp://www.trademark-clearinghouse.com/content/what-trademark-clearinghousehttp://www.trademark-clearinghouse.com/content/what-trademark-clearinghouse
Trademark Clearinghouse
The Clearinghouse functions as a
centralized watch service for trademark
owners registered with the
Clearinghouse. It does not prevent or
block someone from registering a domain
name including a trademark, it merely
notifies the registrant of the registration
or pending application for registration.
82
VII. Options Once Infringing
Domain Name Identified
Once a trademark owner becomes aware of
a cybersquatter, there are various options
available: (1) do nothing; (2) monitor the
use to see if a problem develops or persists;
(3) send a cease and desist letter; (4)
institute a UDRP or URS proceeding; or (5)
institute a suit in federal court alleging a
violation of the ACPA.
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Which Dispute Option to Choose?
The UDRP and URS do not offer any
injunctive or monetary relief or an award of
attorneys’ fees or costs, nor can they
consider other issues between the parties.
The URS only applies to relatively new
gTLDs.
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ACPA Option
If the trademark owner needs to stop the
use of the domain name immediately and
can get jurisdiction, it should consider
bringing an ACPA claim in federal court and
seek a temporary restraining order.
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UDRP
The greatest problem with the UDRP is
inconsistent panel decisions based on the
application of differing, or no clear
substantive, law, as well as no direct
appellate review of panel decisions (just the
option of initiating a court proceeding)
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URS
Is suspension of the domain name enough?
• Suspension lasts for the remaining
balance of the registration period on the
domain name
• If transfer better, go with UDRP.
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ACPA comparison to UDRP/URS
• The requirement of establishing the bad-faith
use and registration of the domain name in
the UDRP/URS is more restrictive than the
standard under the ACPA in which bad-faith
registration can be the basis for a cause of
action.
• Under the ACPA, unlike the UDRP/URS, one
must show that the defendant used,
registered, or trafficked in the domain name
with a bad-faith intent to profit from the
mark.
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UDRP and URS
• Apart from the benefit of a temporary
restraining order, however, a UDRP or URS
proceeding usually is much faster than a
federal case instituted under the ACPA.
• Once a panelist has been chosen in a WIPO
UDRP proceeding, a decision will be issued
within 14 days, for an average total time of
approximately six weeks. A URS panel will
release a decision in approximately three
weeks.
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Enforcement Options
For parties that want to deal with
straightforward cases of cybersquatting,
and have no desire to seek monetary relief
or stop the infringing use of a mark on a
website, the UDRP or URS is the better
forum.
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Jonathan protects brands, copyrighted works and domain names throughout
the world. As part of his practice, Jonathan represents plaintiffs and
defendants in a wide variety of disputes involving trademark, copyright, trade
secret, right of publicity, breach of contract, unfair competition and false
advertising claims. As an Adjunct Professor at Northwestern University School
of Law, he teaches the course on trademarks and unfair competition law,
while at The John Marshall Law School, he teaches a course on right of
publicity and privacy law. He also serves as Pro Bono General Counsel for the
Chicago Bar Association. A trained mediator, he was selected by the District
Court for the Northern District of Illinois to be on its list of Lanham Act
Neutrals for its trademark mediation program.
Jonathan has co-authored a one-volume treatise entitled "Trademarks and
Unfair Competition: Critical Issues in the Law" that is published by Law
Journal Press of New York, the Illinois chapter of the International Trademark
Association's U.S. State Trademark and Unfair Competition Law, as well as a
chapter on "Domain Names and Trademarks On the Internet" for "The
Intellectual Property Handbook: A Practical Guide for Franchise, Business
and IP Counsel."
Jonathan S. Jennings
Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
200 South Wacker Drive, Suite 2900
Chicago, IL 60606
312-554-7937
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Debra has been named a Tech Titan by the San Antonio Business Journal and a VIP Geek by Geekdom. WOAI radio has called her one of the top Internet and cyber lawyers in the state of Texas. She maintains a diverse transactional and litigation practice for emerging companies in the technology and Internet-related industries, and she uses her tech acumen to assist non-tech clients navigate the complex, new-world legal issues presented by emerging technologies. She is a frequent writer and presenter on the intersection of technology and the law. Prior to her legal career, she was a professor at St. Mary’s University.
Debra L. Innocenti-Placette
[email protected] 110 E. Houston Street, 8th Flr San Antonio, Texas 78205 210.816.5714
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